How the Madrid Protocol Is Transforming Jamaica’s Trademark Landscape

The Trade Marks (Amendment) Act 2021, (the Amendment Act) has introduced several changes to the trademark landscape in Jamaica, not least by paving the way for Jamaica’s accession to the Madrid Protocol on December 27, 2021, when the Government of Jamaica deposited its instrument of accession to the Protocol, making Jamaica the 110th member of the Madrid System. This was almost six months after the Amendment Act came into effect on June 30, 2021.

The Protocol was scheduled to enter into force for Jamaica on March 27, 2022. However, even with this official entry date, the absence of accompanying procedural rules left applicants under the Madrid System in limbo for more than a year.

The Trade Marks (Amendment) Rules 2022 were published on April 19, 2023, and officially took effect on September 30, 2023, giving life to the Madrid Protocol in Jamaica and simultaneously implementing a substantial increase in official fees for all trademark actions, with some fees rising by up to 75 percent. The Amendment Rules 2022 are to be read and construed as one with the Trade Marks Rules, 2001 and govern the practical and procedural aspects of all trademark matters.

Having been in effect for more than a year now, it is worth examining the major changes and reflecting on the impact these changes have had on the Jamaica Intellectual Property Office (JIPO), trademark practitioners and proprietors, and the trademark practice overall.

Requirements for Address for Service

Although under the Protocol, international applicants are not required to file a local address for service when designating Jamaica, Rule 9(9)(b) of the Amendment Rules provides that a local address for service will be required when responding to a refusal from the Registrar, when making a subsequent application, or when making a request directly to the Registrar in respect of that registration.

Administered by the World Intellectual Property Organization (WIPO), the Madrid member profile on Jamaica outlines several actions for which a local representative must be appointed if the applicant has no address for service in Jamaica:

• Contesting observations by third parties;
• Submitting regulations for collective marks and certification marks;
• Submitting a letter of consent;
• Contesting ex officio provisional refusal, by requesting review or filing an appeal;
• Contesting a decision by the Office or filing an appeal;
• Requesting an extension of time limits;
• Filing of an opposition, invalidation, or cancellation action;
• Contesting an opposition, invalidation, or cancellation action;
• Requesting a division of an International Registration before the Office;
• Requesting a merger of International Registrations resulting from division before the Office;
• Recording a license locally;
• Requesting the Office to take note of a change of agents;
• Filing a transformation application;
• Requesting a local Certificate of Protection; and
• Submitting observations as a third party.

Where a local representative is being appointed to respond to office actions or in any instance where an agent is being appointed for the first time or in substitution for another agent, a “Request to Appoint or Change an Agent or Enter or Change an Address for Service” (Form TM3), is required. Under the current practice, Form TM3 does not need to be notarized or legalized, and a duly authorized representative of the applicant can sign it. JIPO will accept a scanned copy.

Grounds of Refusal

Applications filed through Madrid are still subject to examination by JIPO, on both absolute and relative grounds of refusal. Under Article 5(2)(b) of the Madrid Protocol, Jamaica opted for an extension of the refusal period to 18 months. Where JIPO issues a provisional refusal, the holder (applicant) must respond within two months from the date WIPO’s International Bureau sends a copy of the refusal notification to the applicant/agent. If the holder does not respond within the given time limit, the designation of Jamaica is considered abandoned. However, time limits may be extended before the Office for procedures concerning ex officio provisional refusals.

To date, the most common ground of refusal that JIPO has issued for Madrid filings has been related to overly broad or vague specifications of goods and services. Before March 4, 2015, JIPO interpreted the Trade Marks Rules broadly to accept class headings under the Nice Classification, which would generally cover all goods and services available in a particular class. A Practice Direction of the same date narrowed the scope of interpretation to refuse broad class headings and require applicants to list specific goods or services for which they sought protection.

The Trade Marks (Amendment) Rules (2022) solidified this Practice Direction into law by amending Rule 8 to expressly prohibit the acceptance of applications which include a reference to class headings under the Nice Classification.

Pursuant to Rule 8(4),

Subject to paragraph (5), an application for the registration of a trade mark shall not include a reference to class headings under the Nice Classification of Goods and Services.

(5) The Registrar shall refuse to consider an application for the registration of a trade mark that includes a reference to class headings under the Nice Classification of Goods and Services, unless the Registrar determines that the specification is not vague.
(Emphasis added.)

Translation Requirements

Another frequent office action JIPO issues in respect to Madrid filings, relates to the translation requirements for marks or documents being filed in a language other than English. The Trade Marks Rules have always required that where an applicant files a trademark or other document in a language other than English, the applicant must send a translation into the English language to the Registrar.

Previously, in practice, this simply meant that the local agent could provide the Registrar with a letter indicating the translation, as instructed by the applicant. However, Rule 58(2) of the Trade Marks (Amendment) Rules introduced a new requirement, which has been the basis of an office action for many incoming Madrid filings.

Rule 58(2) provides that the foreign language translations into English must be prepared by a “trained foreign language translator.” Further, Rule 58(3) provides that if the Registrar doubts the accuracy of an English language translation, the Registrar may refuse to accept that translation and may require a translation prepared by another trained foreign language translator.

JIPO has adopted a strict approach to this Rule, and although the Rule does not explicitly require the certification of the foreign language translator to be provided, in practice, the application will not proceed unless the Registrar is satisfied that a certified foreign language translator has provided the translation.

Accessibility to the Register of Trade Marks

Jamaica has been a forum for nuanced filing strategies, particularly due to the inaccessibility of information on pending and unpublished trademarks pursuant to a search request. Even with Jamaica’s accession to Madrid, this remains unchanged, and in fact, a Practice Direction issued in February 2024, has solidified the continued viability of these strategies.

Under the Practice Direction, JIPO launched a new search platform, known as e-JIPO, and has made it clear that users of this platform will “NOT have access to pending or unpublished trademark applications.” A detailed trademark search must be conducted by a member of JIPO’s staff and will only provide further information on marks that were already revealed by the basic search.

Likewise, as was the prior practice, proprietor searches can still only be conducted directly with JIPO, and will only reveal published and registered marks unless the local agent on record for the marks conducts the search. Importantly, only applications filed through the national route benefit from this facility. Applications designating Jamaica through Madrid will be uploaded to WIPO’s Madrid Monitor online service platform and hence will be visible to third parties.

As a result, applicants need to bear in mind that this practice will also affect the results of a pre-clearance search since new and pending applications will not appear in those results. It is therefore possible that the search results could omit an unpublished application for an identical or similar mark, which could operate as a bar to the registration of the proposed mark.

Madrid in Numbers

As of June 27, 2025, a total of 3,421 subsequent designations of Jamaica have been made under Madrid and there are currently eight outgoing applications. A review of WIPO’s Madrid Monitor indicates that the top five jurisdictions from which these designations originate are, the United States, China, Bulgaria, the European Union, and Switzerland, broken down as follows:

Source: WIPO eMadrid, Madrid Monitor, June 27, 2025.

While overseas applicants appear to have used the Protocol extensively, the same cannot be said for local applicants. A search of the WIPO’s Madrid Monitor reveals that to date, only eight applications have been submitted with Jamaica as the Office of Origin. This is the case even though both the government and the private sector in Jamaica viewed the Madrid Protocol as a game changer for Jamaican entrepreneurs, creators, and “Brand Jamaica” overall, facilitating the ease of doing business and reaching new markets through the establishment of a convenient and practical avenue for registering and managing trademarks in more than 130 jurisdictions worldwide.

A common misconception persists that a one-size-fits-all approach suits the Caribbean region and that an applicant can make a single filing to protect a mark within the entire region. However, this is not the case. Due to the Caribbean’s history, the region is quite diverse in culture, language, and legal systems, and the guidance of local practitioners is still invaluable. Likewise, it seems some expected the Madrid Protocol would be a panacea for local businesses seeking global protection.

Within the region, only five of the independent Caribbean jurisdictions are members of Madrid: Antigua and Barbuda, Belize, Cuba, Jamaica, and Trinidad and Tobago. The Caribbean Netherlands, Curaçao, the French Caribbean, and Sint Maarten jurisdictions are part of the Protocol due to their respective statuses within the Netherlands and France. A review of the statistics for those jurisdictions that are Madrid Protocol members, reveals a similar situation to that of Jamaica, whereby the number of subsequent designations far surpasses the number of outgoing applications.

Therefore, while the Protocol is, in theory, useful for local applicants seeking to register their marks in developed trading partners, the practice has not borne this out since it appears that despite the reduction in the basic fees for filing through the Protocol, applicants from developing jurisdictions still need to consider a number of factors before adopting an international filing strategy. The absence of a uniform trademark system across the region reduces the cost effectiveness of Madrid for those who are interested in protecting their rights within the region.

It is also notable that despite the increase in the number of incoming Madrid filings in Jamaica, JIPO’s resources have not increased in proportion. Consequently, the timelines for the processing of applications have slowed significantly, and although applicants can pay extra for expedited services, those timelines are still relatively slow.

Time of Change

After just over a year since the Madrid Protocol took effect, Jamaica’s trademark system can be considered to be more robust, offering local trademark proprietors more options for global brand protection and providing foreign proprietors with easier access to registered trademark rights in Jamaica.

This has clearly come at a cost, including substantially higher official fees for national applications, more stringent procedural requirements for all applicants, and longer prosecution timelines.

The national IP Office will need better resources in the future to handle the disproportionately large number of incoming Madrid filings while ensuring that it can serve applicants who chose the national route equally as well.

Evidently, for Jamaica, the initial belief that the Madrid Protocol was a cure-all solution for local businesses seeking worldwide protection appears to have been overly optimistic. In this evolving landscape, the role of local trademark practitioners remains critical in helping clients navigate the new requirements, managing their expectations, and guiding them toward the most optimal filing strategies in alignment with their goals.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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